POPA Comments Regarding the Planned Rule Changes

POPA COMMENTS REGARDING THE PLANNED RULE
CHANGES

PUBLISHED IN THE FEDERAL REGISTER ON OCTOBER 5,
1998

In response to the invitation of the Patent and Trademark
Office for public comments regarding the changes to implement
the Patent Business Goals published in Federal Register on
October 5, 1998, the Patent Office Professional Association
(POPA) sets forth the following comments. The numbers set forth
below follow the numbering scheme used in the Federal Register
Notice.

3. Permitting delayed submission of an oath or
declaration, and changing the time period for submission of
the basic filing fee and English translation (37 C.F.R. 1.52
and 1.53).

Permitting applicants to submit the required oath or
declaration after the Notice of Allowance sends us back to the
days of piecemeal prosecution, with all its potential for delay
and increased cycle time. To the extent that the oath or
declaration is viewed as a formality that may never be read by
anyone, the agency should seek a legislative change to
eliminate the requirement.

The signing of the oath or declaration serves the salutary
purpose of providing actual notice to applicants of their duty
to disclose all known material information regarding
patentability. If an applicant is permitted to delay the
signing of the oath or declaration, this purpose will be
undercut. To the extent that the applicants discover their duty
after the end of prosecution, and then submit additional prior
art, there may be a need to restart the examination
process.

In addition, signing an oath sensitizes an inventor to the
fact that he or she, not the attorney alone, is responsible for
the content of the application. That purpose can best be served
when the oath is presented at the time the application is
filed.

Delay in signing of an oath may also cause applicants,
especially in a large entity situation, to delay the precise
identification of true inventor(s), resulting in a potential
for reopening prosecution. Delay may also cause more serious
problems due to inventors who become unwilling or unavailable
to sign the oath. Such situations may arise when inventors
change jobs or residence.

4. Limiting the number of claims in an application
(37 C.F.R. 1.75).

We believe that the proposal to limit the numbers of claims
in an application would improve the quality of examination by
enabling examiners to more equitably divide their time among
all the cases in their docket. The establishment of a 40 claim
limit seems to be generous in comparison to the requirements of
many foreign countries.

Numerous examiners have emphasized the significant value of
this proposal. There is a general acceptance that a large
number of claims causes confusion and thereby consumes a
disproportionately large amount of time. The examiners are
convinced that this is the most significant rule change in the
entire package.

Most importantly, this rule change still protects
applicants' right to file as many claims as they desire by
filing multiple applications. In a sense, this rule can be
viewed merely as a mechanism for charging a more equitable fee
for the amount of work entailed by a large number of
claims.

The proposals do not explicitly take into account the effect
of multiple dependent claims. The PTO should specify that the
current practice used to determine, for fee purposes, the
number of claims in the applications that have multiply
dependent claims is the practice to be applied to the
calculation of the maximum number of claims permitted.

5. Harmonizing standards for patent drawings (37
C.F.R. 1.84).

The main impact would be on the subject of surface shading in
the design patent applications. The Office should set new
guidelines to define the examiners' objection to the lack of
surface shading. It appears that the surface shading would only
need to be added if there is a question of clarity under 35 USC
112, first paragraph, or indefiniteness under 35 USC 112,
second paragraph.

The PCT drawing rules are problematic for plant patent
applications in that:

PCT Article 7 (7.2) states that the time limit shall in no
case be shorter than two months. This proposed change
introduces a new time period which does not contribute to the
compact prosecution or cycle time.

PCT Rule 11 - limit the drawing sheet size to A4 is
burdensome to the applicant and conflict with the
applicant-friendly business goal of the Office. In 1996, the
drawing sheet rules were changed to restrict sheets to A4 or 8
Â½ X 11 to accommodate the printer with the margin
preference. Prior to that time, the drawing sheets 8
Â½ X 13 and 8 Â½ X 14 were also acceptable
with different marginal requirements. To limit applicants'
choices serves no purpose in reducing the cycle time.

Rule 11 (37 C.F.R. 1.437) does not allow applicants to
submit drawings/photographs after 30 days from receiving
notice. In addition, the requirement that all drawing sheets
must be numbered is not in the current practice in plant
applications since it is unnecessary. The plant examiners
should have the discretion to require the numbering of the
drawing sheets.

Note that M.P.E.P. 1825, second column, states that "The PCT
makes no provision for photographs" and "color photographs are
not accepted." This is in direct conflict with 37 C.F.R.
1.165(a) and (b) that require color photographs in plant patent
applications.

Since plant patent application cannot be passed to issue
without formal drawings being of record, thus, the requirements
that applicants can only amend the drawings if a "demand for
international preliminary examination is filed" is unnecessary
in plant application.

6. Printing patents in color (37 C.F.R.
1.84).

Printing patents in color, especially, plant and design
patents, is expected to be of significant benefit to examiners
and the public when conducting a search. However, the Office
should clarify that the color shown in the patent may not be
the
actual
color of the claimed element due to the difficulty of matching
precise hues in economically feasible printing processes. There
should be a notice or warning that the actual color is what is
shown or described in the application file, not what is
printed. For color critical patents, the Office should set
forth a requirement that the printed color must be compared
against a recognized color standard as is done in the current
practice for plant patents.

The PTO should encourage applicants to use color in the
drawings to identify individual parts or paths when it would
enhance understanding,
e.g
., fluid paths in cases having complicated flow paths, or
individual parts in a complex machine having a plurality of
complicated parts.

The reduced time for filing corrected or formal drawings
appears to the contrary to the needs of many applicants. The
period of one month may not provide applicants sufficient time
to correct or submit the formal drawings, especially, in design
patent applications. The examiners in Group 2900 frequently
receive phone calls after the Notice of Allowability from
applicants for clarification on drawing objections.

We support allowing submission of large computer program
listings and nucleotide and/or amino acid sequence listings in
a machine readable form. However, we are concerned about the
access to the sequence listings if the rules go into effect in
the present form. The examiners must occasionally directly read
the actual sequence. In the absence of a paper copy, will the
computer or machine readable forms be available to the
examiners other than through a library sequence search? If not,
the examiners will be left with thumbing through the
specification as the only means to actually view the sequence
of interest. Sometimes, that is easy, more often, it is not.
POPA suggests that the Office requires a list of locations
where in the specification, a particular sequence is found.
This could be limited to the first occurrence or all
occurrences of the sequence in the specification such as:

"SEQ ID NO. 1, see page 4, line 22."

"SEQ ID NO. 2, see page 8, line 7."

The above listing will save the examiner some time if he/she
needed to actually have the sequence in front of them. This
page could be placed at the last page of the specification,
right before the claims where the current sequence listing is
placed. This page would need to be canceled by informal
examiner's amendment at time of allowance since the listing
would not correspond to the issued patent and since it would be
redundant to the actual sequence listing that is printed in the
issued patent. But we think that would be a fair trade off to
the examiner in exchange for a quicker access to the sequences
in the specification.

This would still represent a significant amount of paper for
cases having extensive numbers of sequences but far less than
an entire sequence listing and would still give the examiner a
relatively efficient means of locating sequences in the
specification when necessary. This would also eliminate any
need for the examiner to have access to the CRF listing which
we suspect the Office would not want to give anyway.

POPA does not support the allowance of submission of the
Information Disclosure Form (IDS) in a machine readable form
since it would take valuable examining time to print out the
voluminous
cited references.

The Office should charge additional fees in proportion to
the number of cited references and provide additional time to
examiners in proportion to the number of references cited in
the information disclosure statement (IDS). Limiting the number
of the references cited in the IDS is not the best solution
since it would infringe upon applicants' rights to submit the
number of references that applicants deem to be material and
may affect the validity of the patents in case of
litigation.

In addition, the Office should require the applicants to
submit a copy of all of the citations cited in the IDS. The
rule change discusses the burden on the examiners to locate
cited U.S. applications. However, there is an equal or greater
burden on the examiners to track down all the parent
applications to find the prior art cited in the parent
applications. The copies of the cited references in the parent
applications are ordinarily missing. Therefore, the Office
should require the applicants to submit a copy of each and
every citation in the IDS to be considered by the
examiners.

The deferred examination established by proposed rule seems
to have a similar impact of so-called "submarine patents" in
that no member of the public would know what invention will be
actually protected by the issued patents.

Deferred examination will dramatically change the economics
of examination. The experience of foreign countries shows that
there is a significant drop in the total number of applications
examined with a concomitant increase in the complexity of
examining a single application. The current fee structure is
not geared to handle the impact of this change.

We have a concern that the suspension of action coupled with
the requirement of publication of the application will vastly
increase the filing of protests with supporting art by
competitors or protestors. Consequently, the first Office
action would
become, in effect, a protest proceeding,
i.e
., an
inter parte
proceeding instead of an
ex parte
proceeding. The protest situation would require more time to
consider the cited art and to examine the applications.

Under current practice, applicants may file unlimited
preliminary amendments and supplemental replies (papers)
without paying additional fees. In some cases, the numerous
gratis
preliminary amendments and supplemental replies cause confusion
and undue burden when PTO clerical staff enters these papers
and when the examiners consider them. POPA supports this
requirement since it would help to alleviate this problem.

POPA supports this proposal if the rule positively requires the
applicant to submit a marked-up copy of the changed paragraphs
or claims. The positive requirement of the marked-up copy will
facilitate the examiners (and/or the Court during litigation)
to detect new matters,
i.e.
, to reduce cycle time.

In addition, the proposal should make clear that the
requirement of a replacement paragraph is not applicable to the
examiners' amendment in order to encourage the examiners'
amendments to expedite the prosecution.

14. Providing presumptive elections (37 C.F.R.
1.141).

It appears that the proposed change will save some time
provided that there is no successful traverse of the
restriction requirement. If there is a successful traverse, the
equivalent of a second "first action" will have to be
issued.

To implement the proposed change, more details will have to
be determined with respect to restrictions of patentably
distinct species and Markush groups. It is not clear how a
single species will be identified as the presumptive elected
species in application in which both generic and subgeneric
claims are presented prior to a claim that sets forth a single
species.

The proposal recognizes that design examiners ordinarily group
search their applications and would require extra time for
searching if the application is to be searched individually. We
believe that this recognition is correct and will require
granting examiners extra time.

POPA supports the
status quo
of appeal procedures which include an appeal conference as
necessary. The following section on appeal conferences copied
from the MPEP 1208 (July 1998) shows that the current appeal
conference procedure achieves the same result of reducing the
doubtful rejections sent to the Board
without additional cost to the applicants:

Appealed cases in which the brief has been filed may be
reviewed by conference in the group, in a manner deemed
appropriate by the Group Director. For example, those
participating in the conference may include (1) a primary
examiner, (2) the examiner charged with preparation of the
examiner's answer, and (3) another examiner, known as the
conferee, having sufficient experience to be of assistance in
the consideration of the merits of the issues on appeal.

The group director has the discretion as to whether or not
appeal conferences are necessary in the examining group and, if
so, in which instances they are to be held. If an appeal
conference is held, the SPE should be informed thereof.

If a conference is held, the primary examiner responsible
for signing the examiner's answer should weigh the arguments of
the other examiners. If it is determined that the rejection(s)
should be maintained, the examiner will then prepare his or her
examiner's answer. During the conference, consideration should
be given to the possibility of dropping cumulative art
rejections and eliminating technical rejections of doubtful
value.

The pre/post appeal review would impose undue pressure on
the examiners to allow the cases because it does not provide
for an on the record explanation what is wrong with any
rejection that is eliminated. Multiple internal reviews are the
hallmark of a bureaucratic system. Let's keep the appeal
procedure simple and direct with full on the record
accountability for all decisions that are made.

21. Creating a PTO review service for
applicant-created forms.

The review service would release examiners from the burden
of checking for defects in applicant-created forms. We support
this service.